Intellectual Property Committee Newsletter
Winter 2016
In This Issue

Important Dates

Business Law Section Spring Meeting
April 7-9, 2016
Montréal, QC, Canada


Editorial Board
Message from the Chair

Welcome to the re-launch of the Intellectual Property Committee's Newsletter. These are exciting times for our Committee as we continue to be one of the fastest growing Committees in the Business Law Section. Many lawyers, judges, educators and students have discovered the unique position that IP holds in business. It is not surprising then that a committee dedicated to IP issues is right at home within the Business Law Section. I invite you to reach out to myself or my vice-Chair Jeremy Smith to discuss how you can get more involved with our Committee. Even better, I encourage you to attend the Spring Business Law Section Meeting in historic Montreal this coming April. We will have some fantastic programs run by the IP Committee, as well as a Committee dinner that we co-host with Cyberspace, Corporate Counsel and Health Law to name a few. Stay tuned for more details.

Our Committee is dedicated to great programming, developing strong content, and furthering the understanding of IP issues encountered by business lawyers. I look forward to your participation as our Committee continues to evolve.

Best regards,

Peter Snell - Chair, Intellectual Property Committee

Emerging Issues

Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board
By Adam Kelly and Arthur Yuan

Asserting patent rights are no longer the province of pencil-pushing technology companies. Many businesses, big and small alike, have recognized the tremendous value derived from patents and have incorporated them into their revenue-generating strategies. Those strategies often lead to patent infringement disputes. Although patent disputes between patent owners and their challengers are typically resolved in federal court, Congress recently established alternative forums within the US Patent and Trademark Office (PTO)-forums which have become a heavily-contested battleground.

Read more...

Are Your Clients Including QR Codes on Investor Statements? Doing So Could Land Them in a Patent Infringement Lawsuit
By James P. Muraff and Maxwell B. Snow

So your client contacts you for counsel on streamlining the shareholder notice and voting process. In response, you either suggest the e-proxy process or bless your client's e-proxy ideas. The client's technologically savvy staff then includes QR (Quick Response) codes in the new e-proxy statements. These QR codes enable shareholders to automatically launch your client's voting or investor information webpage in response to a smart phone scan. Down the road, your client gets sued for patent infringement. Surprised? Don't be.

Read more...

ARGENTINA: Court of Appeals Holds e-Commerce Platforms Liable for Trademark Infringement and Rules That Use of a Trademark as Keyword Infringes Upon Trademark Rights
By Diego Fernández

Recently, Divisions I and III of the Federal Court of Appeals in Civil and Commercial Matters issued decisions finding DeRemate.com de Argentina S.A. ("DeRemate") and Compañía de Medios Digitales CMD S.A. ("CMD") , two e-commerce platforms, liable for trademark infringement as the result of allowing their users to sell counterfeit NIKE goods. DeRemate was ordered to pay damages in the amount of AR$ 200,000, while CMD was ordered to pay AR$ 180,000, both plus interests.

Read more...

With an Intellectual Property Portfolio Strategy Comes Company Growth
By Ric Gruber

Whatever the size of the company, from Fortune 500 company to startups, there is little choice today but to be vigilant with respect to intellectual property ("IP") enforcement. With businesses in all industries necessarily using social media and creating forceful online presences, the need for brand and content protection immediately exists and requires a thoughtful and comprehensive IP strategy from the top down.

Read more...

Key IP and Data Privacy Issues in the Internet of Things
By Chris Anderson and Tricia Brauer

While the various legal issues presented by the IoT are not independently novel, the IoT brings together multiple, previously unrelated, legal issues - data security and privacy, intellectual property, and consumer protection, together with other legal issues typically encountered by growing companies - corporate governance, labor, benefits, tax and others. Below are some key legal issues that have taken center stage through the recent growth of the IoT market and should be considered by growing IoT companies.

Read more...

On the Docket

Don't forget to sign up for the Business Law Section 2016 Spring Meeting in Montreal on April 7-9. Our committee's CLE offerings include:

  • "Skirting the Snares of Intellectual Property in International Transactions"
  • "Views From In-house Attorneys on the Increased Importance of Intellectual Property Identification and Protection"

And, of course, plan to attend the Intellectual Property Committee Meeting and the Dinner!

Did you know we have a listserve? In order to send a message to the listserve, send a message to the email address below. The listserve is for members only. The email address is BL-IP@mail.americanbar.org.

A Note from the Editor

I am thrilled to re-launch the Intellectual Property Committee Newsletter. Our quarterly newsletter will be powered by content from you! To that end, please send me your latest news on subcommittee work and member news (including professional transitions, published works, and speaking events). We also look for articles on topics of interested to our members. Articles should be 300 - 1000 words and not already published elsewhere. To submit member news, subcommittee information, meeting information, articles, or to ask questions, please contact Meredith Mays Espino.

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